Haas v. Leo Feist, Inc.

• Decision Date: 23 May 1916
• Citation: 234 F. 105
• Parties: HAAS v. LEO FEIST, Inc., et al.
• Court: U.S. District Court — Southern District of New York

234 F. 105

HAAS v. LEO FEIST, Inc., et al.

United States District Court, S.D. New York.

May 23, 1916

On Rehearing, June 8, 1916.

This is a suit in equity to enjoin the infringement of a copyrighted song entitled, 'You Will Never Know How Much I Really Cared. ' In the spring of 1914 the plaintiff, who was at that time in the employ of one Adolph Deutsch, composed the melody and chorus of the song in question, which was reduced to notation by one Rouch, and for which one Cahalin wrote some words. A copyright to the song was taken in the name of the Haas & Cahalin Music Company, a trade-name of Deutsch. Haas was to get one-third of all the profits from the sale of the song, and Cahalin one-third, and Deutsch the remaining third. About 2,000 copies were struck off, 1,000 for sale and 1,000 to be distributed among singers and other performers in the hopes of popularizing it. All the copies were sold by the 1st of January, 1915, but the song proved a failure, except to the extent of the 1,000 copies mentioned, and no further edition was published. In November of 1914 Cahalin, who had a number of the songs for distribution, gave one to Samuel Smith, a cabaret singer, who at the time was in and out of the studio of the defendant, Leo Feist, Incorporated, where the defendant Piantadosi was employed. About the middle of December, 1914, Cahalin called at the defendant Feist's studio and there saw Smith and the defendant Piantadosi. Smith invited him to come in to hear a song which Piantadosi had just written and which they were both to exploit. He went in, and Piantadosi played upon the piano the infringing song which is entitled, 'I Didn't Raise My Boy to be a Soldier. ' Cahalin at once was struck with the similarity between the chorus of Piantadosi's song and Haas' bur said nothing at the time. In December the defendant Feist began widely to advertise the infringing song in newspapers all over the country. It was copyrighted on December 19 1914, as an unpublished work, and as a published work on January 5, 1915, after which it was put on sale, and at once sprang into the widest possible popularity. During the first three months of 1915 more than 650,000 copies were sold, but being of a most ephemeral and trivial character, its vogue quickly diminished, and at present it has substantially disappeared from the market. Haas first heard the song in the latter part of January, 1915, when performed at a public restaurant, and the similarity between the choruses at that time struck him. He and Cahalin spoke of it together during the month of January, but did nothing until the following March, when they consulted a lawyer, who in turn took no action until this suit was brought on the 28th of January, 1916, at which time the song had long since run its course.

The defendant Feist has a large publishing house in the city of New York and employed the defendant Piantadosi as a casual composer of melodies, though he has small knowledge of musical notation and small skill in playing. His custom was, when he composed a song, to play it over to some other employe of Feist, in this case one Danks, who took down the simple theme upon a 'lead sheet,' as it is called, and afterwards worked it up into so much musical form as was necessary, for which work the defendant Feist paid Danks by the piece. The whole melody of the song, 'I Didn't Raise My Boy to be a Soldier, ' Piantadosi gave to Danks during the week of November 21-28, 1914, as appears with certainty by the memorandum which Danks made at the time and upon which he charged the defendant Feist. Piantadosi swore that he had composed it about the middle or latter part of October in the year 1914, at which time he had never heard of the plaintiff's song. He testified that the words were in existence before that time, and that it was to them that he had written the music, although the author of the words was not called, nor was his presence accounted for. He denied that Smith had ever given to him a copy of the plaintiff's song, or that at the time when he wrote the song Smith was in the employ of the defendant Feist, or that he ever played over the song for Cahalin personally while Smith was present, as Cahalin testified. The plaintiff in rebuttal called Woods and Dully, who each swore that Piantadosi in December, 1914, played the song for Cahalin in their presence, as Cahalin had said. Neither party called Smith, who was said to be in Canada at the time of the trial.

William H. Griffin, of New York City, for plaintiff.

Nathan Burkan, of New York City, for defendant Leo Feist, Incorporated.

Charles Goldzier, of New York City, for defendant Piantadosi.

LEARNED HAND, District Judge (after stating the facts as above).

Piantadosi's piracy of the chorus seems to me sufficiently established for a finding. That Cahalin gave a copy to Smith and that Smith had access to Piantadosi I believe upon the weight of evidence. Cahalin was a better witness than Piantadosi, who did not impress me, and who was not only contradicted in one matter by Woods and Dully, but was proved untruthful as to his borrowing of themes upon other occasions. The opportunity I therefore find to have existed at about the proper time. For the remaining part of the inference, I rely upon such musical sense as I have. I am aware that in such simple and trivial themes as these it is dangerous to go too far upon suggestions of similarity. For example, nearly the whole of the leading theme of the plaintiff's song is repeated literally from a chorus of Pinafore, though there is not the slightest reason to suppose that the plaintiff ever heard the opera. Nevertheless, between the two choruses in question there is a parallelism which seems to my ear to pass the bounds of mere accident. If the choruses be transposed into the same key and played in the same time, their similarities become at once apparent. In certain of the bars, only a trained ear can distinguish them, and their form and rhythm is quite the same. It is said that such similarities are of constant occurrence in music, and that little inference is permissible. Perhaps I should not take them as enough without the opportunity proved, the habits of Piantadosi shown in other instances, and the serious question of his credibility but it would be absurd not to regard them as evidence of the most impressive character in combination with the rest. The case is not of the mere suggestion of a bar common to each, but of a continuously suggestive melodic parallelism, except at the end. Identity was not to be expected, but derivation seems to me proved.

The plaintiff's right to damages against the defendant Feist, regardless of its innocence, is unquestionable. Gross v. Van Dyk Gravure Co., 230 F. 412, . . . C.C.A. . . . . And in spite of some language in that opinion looking to the possibility of a different rule for profits, I think the same should apply to them as to damages. When, as in copyright, the law provides a form of notice, it imposes upon every one at his peril the duty to learn the facts conveyed by the notice. Without some such rule it could not be a tort innocently to copy a copyrighted work, because it could not be said that among the reasonable result of the defendant's acts was comprised an infringement. It becomes a tort only when the statute imposes a duty on every one to advise himself of the copyright. I cannot see why there should be any difference between damages and profits in this respect. Hence a decree for an accounting of profits will go against both defendants.

It does not necessarily follow, however, that the accounting shall be exempt from the usual principles of equity. Indeed, the conduct of the plaintiff may have a controlling effect upon it. West Pub. Co. v. Edward Thompson Co., 176 F. 833, 100 C.C.A. 303. The plaintiff's assumption that the statute always rigidly requires an accounting is shown by that case to be without warrant. The delay was of 16 years in that case, but the infringing publication took that long to appear, and the principle is as well illustrated in the case at bar as it was there. Equity will control its peculiar remedy of an account of profits according to its own sense of justice. It must be obvious to every one familiar with equitable principles that it is inequitable for the owner of a copyright, with full notice of an intended infringement, to stand inactive while the proposed infringer spends large sums of money in its exploitation, and to intervene only when his speculation has proved a success. Delay under such circumstances allows the owner to speculate without risk with the other's money; he cannot possibly lose, and he may win. If the defendant be a deliberate pirate, this consideration might be irrelevant, and I think it such as to Piantadosi; but it is no answer to such inequitable conduct, if the defendant Feist is innocent, to say that its innocence alone will not protect it. It is not its innocence, but the plaintiff's availing himself of that innocence to build up a success at no risk of his own, which a court of equity should regard. A few weeks' delay in the case of a song so ephemeral as this may have the same effect as 16 years, when the publication is a legal encyclopedia in 30 volumes.

This rule cannot be effectively applied until there is a reference. Cahalin had a beneficial interest in the song to the extent of one-third. His knowledge of the proposed infringement went back to December, and debars him from any profits whatever, since the defendant did most of its exploitation after that...